`571-272-7822
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`Paper 7
`Entered: October 2, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUN PHARMACEUTICAL INDUSTRIES, LTD., SUN
`PHARMACEUTICAL INDUSTRIES, INC., and
`SUN PHARMA GLOBAL FZE,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`_______________
`
`Case IPR2017-01929
`Patent US 9,187,405 B2
`_______________
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
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`IPR2017-01929
`Patent US 9,187,405 B2
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`
`INTRODUCTION
`I.
`Sun Pharmaceutical Industries, Ltd., Sun Pharmaceutical Industries,
`Inc., and Sun Pharma Global FZE (collectively, “Sun”) filed a Petition
`requesting an inter partes review of claims 1–6 of U.S. Patent
`No. 9,187,405 B2 (“the ’405 patent”). Paper 2 (“Pet.”). Along with the
`Petition, Sun filed a Motion for Joinder to join this proceeding with
`IPR2017-00854. Paper 3 (“Mot.”). Sun filed its Petition and Motion for
`Joinder on August 16, 2017, within one month after we instituted trial in
`IPR2017-00854. Patent Owner, Novartis AG, (“Novartis”) has not filed a
`Preliminary Response to the Petition, and any such response is due
`November 25, 2017.
`As explained further below, we institute trial on the same grounds as
`instituted in IPR2017-00854 and grant Sun’s Motion for Joinder.
`
`DISCUSSION
`II.
`In IPR2017-00854, Apotex, Inc. and Apotex Corp. (collectively,
`“Apotex”) challenged claims 1–6 of the ’405 Patent on the following
`grounds:
`Ground Claims
`1
`1–6
`
`References
`Kovarik1 and Thomson
`
`Basis
`§ 103
`
`
`1 Kovarik and Appel-Dingemanse, WO 2006/058316, published June 1,
`2006.
`
`2
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`IPR2017-01929
`Patent US 9,187,405 B2
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`Ground Claims
`2
`1–6
`3
`1–6
`
`
`References
`Chiba,2 Kappos 2005,3 and Budde4
`Kappos 20105
`
`Basis
`§ 103
`§ 102
`
`After considering the Petition and Patent Owner’s Preliminary
`Response, we instituted trial in IPR2017-00854 on each of the three asserted
`grounds. IPR2017-00854, Paper 11, 27. On August 9, 2017, we instituted
`inter partes review on those same grounds in IPR2017-01550 and granted
`Petitioner Argentum Pharmaceuticals LLC’s motion for joinder with
`IPR2017-00854. IPR2017-00854, Paper 10, 5. On September 11, 2017, we
`similarly instituted inter partes review on those same grounds in IPR2017-
`01946 and granted Petitioner Actavis Elizabeth LLC and Teva
`Pharmaceuticals USA, Inc.’s (collectively, “Teva’s”) motion for joinder with
`IPR2017-00854. IPR2017-00854, Paper 23, 5.
`As with Argentum’s and Teva’s Petitions, Sun’s Petition is
`substantively identical to Apotex’s Petition, challenging the same claims
`based on the same art and the same grounds. Compare IPR2017-01929,
`Paper 2, with IPR2017-00854, Paper 2. For the same reasons stated in our
`Decision on Institution in IPR2017-00854, we institute trial in this
`proceeding on the same three grounds.
`
`
`2 Chiba et al., US 6,004,565, issued Dec. 21, 1999. Ex. 1006.
`3 Kappos et al., “FTY720 in Relapsing MS: Results of a Double-Blind
`Placebo-Controlled Trial with a Novel Oral Immunomodulator,” 252 (Suppl
`2) J. NEUROLOGY Abstract O141 (2005).
`4 Budde, et al., “First Human Trial of FTY720, a Novel Immunomodulator,
`in Stable Renal Transplant Patients,” 13 J. AM. SOC. NEPHROLOGY 1073-
`1083 (2002).
`5 Kappos et al., “A Placebo-Controlled Trial of Oral Fingolimod
`in Relapsing Multiple Sclerosis,” 362(5) N. ENGL. J. MED. 387–401.
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`3
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`IPR2017-01929
`Patent US 9,187,405 B2
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`Having determined that institution is appropriate, we now turn to
`Sun’s Motion for Joinder. 35 U.S.C. § 315(c). Section 315(c) provides, in
`relevant part, that “[i]f the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311.” Id.
`When determining whether to grant a motion for joinder we consider factors
`such as timing and impact of joinder on the trial schedule, cost, discovery,
`and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC,
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`Sun’s motion for joinder is unopposed by all concerned parties. The
`time for Novartis to oppose the motion has expired. See 37 C.F.R. §
`42.25(a)(1)). Further, Sun informs us that Apotex, Argentum, and Actavis
`do not oppose the motion. See Mot. 2 & n.1; Ex. 3001 (email
`communication from Samuel S. Park, dated September 29, 2017).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Sun raises no new grounds of unpatentability from IPR2017-
`00854 and contends that there will be no impact on the trial schedule
`previously set in that case. Mot. 8; see IPR2017-00854, Paper 12. As Sun
`notes, the Petition in IPR2017-00854 is substantively identical to the
`grounds, analysis, exhibits,6 and expert declarations relied on in the instant
`proceeding. Mot. 2, 5, 6. Sun agrees to “coordinate with Apotex regarding
`questioning at depositions and at the oral hearing,” and suggests that
`
`
`6 Sun notes that, as compared to the Apotex Petition, it “added one
`additional exhibit (EX1041) which is a copy of the Federal Circuit Decision
`of April 12, 2017 affirming the Final Written Decision in IPR2014-00784,
`an IPR related to the present proceeding.” Mot., 5–6.
`
`4
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`IPR2017-01929
`Patent US 9,187,405 B2
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`“[b]ecause the Sun IPR is substantively identical to the Apotex IPR, the
`Board may adopt procedures similar to those used in other cases to simplify
`briefing and discovery during trial.” Mot. 9. With respect to such
`procedures, “Sun agrees to the same conditions as set forth in Paper 23 of
`IPR2017-00854.” Ex. 3001.
`In view of the foregoing, we find that joinder based upon the
`conditions stated in Sun’s Motion for Joinder will have little or no impact on
`the timing, cost, or presentation of the trial on the instituted grounds.
`Moreover, discovery and briefing will be simplified if the proceedings are
`joined. Thus, without opposition to the Motion for Joinder from any of the
`parties, the Motion is granted, subject to the same conditions previously set
`forth with respect to the Petitioners joined in IPR2017-00854, Paper 23,
`
`III.
`
`ORDER
`
`Accordingly, it is
`ORDERED that inter partes review is instituted in IPR2017-01929 on the
`following grounds:
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Kovarik and Thomson;
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Chiba, Kappos 2005, and Budde;
`
`Claims 1–6 under 35 U.S.C. § 102 as anticipated by Kappos 2010.
`
`FURTHER ORDERED that Sun’s Motion for Joinder with IPR2017-00854
`is granted, subject to the same conditions previously set forth with respect to
`the Petitioners joined in IPR2017-00854, Paper 23;
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`5
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`IPR2017-01929
`Patent US 9,187,405 B2
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`FURTHER ORDERED that IPR2017-01929 is terminated and joined to
`IPR2015-00854, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
`conditions discussed above;
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-00854 (Paper 12) shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding are to
`be made only in IPR2017-00854;
`
`FURTHER ORDERED that the case caption in IPR2017-00854 for all
`further submissions shall be changed to add Sun Pharmaceutical Industries,
`Ltd., Sun Pharmaceutical Industries, Inc., and Sun Pharma Global FZE as
`named Petitioners after Apotex, Argentum, and Teva, and to indicate by
`footnote the further joinder of IPR2017-001929 to that proceeding, as
`indicated in the attached sample case caption;
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`FURTHER ORDERED that a copy of this Decision shall be entered into the
`record of IPR2017-00854.
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`6
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`IPR2017-01929
`Patent US 9,187,405 B2
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`FOR PETITIONER SUN PHARMA:
`Samuel Park
`WINSTON & STRAWN LLP
`spark@winston.com
`
`FOR PETITIONER APOTEX:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`FOR PETITIONER ARGENTUM:
`Teresa Stanek Rea
`Deborah H. Yellin
`Shannon M. Lentz
`CROWELL & MORING LLP
`TRea@Crowell.com
`DYellin@crowell.com
`SLentz@Crowell.com
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS, LLC
`TLiu@agpharm.com
`
`FOR PETITIONER TEVA:
`Amanda Hollis
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`egoryunov@kirkland.com
`
`FOR PATENT OWNER:
`Jane M. Love
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.com
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`7
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`Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper
`Entered:
`
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`Sample Case Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APOTEX INC., APOTEX CORP.,
`ARGENTUM PHARMACEUTICALS LLC,
`ACTAVIS ELIZABETH LLC, TEVA PHARMACEUTICALS USA, INC.,
`SUN PHARMACEUTICAL INDUSTRIES, LTD.,
`SUN PHARMACEUTICAL INDUSTRIES, INC., and
`SUN PHARMA GLOBAL FZE,
`Petitioners,
`
`v.
`
`NOVARTIS AG.,
`Patent Owner.
`____________
`Case IPR2017-008541
`Patent US 9,187,405 B2
`____________
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`1 Cases IPR2017-01550, IPR2017-01946, and IPR2017-01929 have been
`joined with this proceeding.
`
`